Introduction
Receiving a trademark rejection from INPI (Instituto Nacional da Propriedade Industrial) can be frustrating, but it doesn’t mean the end of the road for your brand. Many businesses face trademark refusals due to conflicts with existing registrations, errors in the application, or lack of distinctiveness.
As legal experts say, “In the world of trademarks, persistence is key.” If your trademark application was rejected (indeferido), there are still legal strategies you can use to fight for your brand name.
In this article, we’ll explore why INPI rejects trademarks, what steps you can take after a refusal, and how to file a new application or challenge the trademark that caused the rejection.
1. Why Was My Trademark Application Rejected?
INPI evaluates trademark applications based on Brazilian Industrial Property Law (Lei nº 9.279/96). A rejection (indeferimento) typically happens for one of the following reasons:
1.1 Conflict with an Existing Trademark
🚨 Most rejections happen because a similar or identical trademark is already registered in the same industry category (Nice Classification).
✅ Example:
- You applied to register “EcoFresh” for a juice brand.
- INPI rejects the application because “EcoFresh Bebidas” is already a registered trademark in Class 32 (beverages).
📌 Lesson: Before applying, always conduct a thorough trademark search to check for conflicts.
1.2 Lack of Distinctiveness
🚨 INPI may reject a trademark if it is too generic, descriptive, or lacks originality.
✅ Example:
- You applied for “Super Mercado” to register a supermarket brand.
- INPI rejects the name because it is too generic and cannot be exclusively owned.
📌 Lesson: A strong trademark should be unique and distinctive to qualify for protection.
1.3 Violation of Legal Restrictions
🚨 Some words and symbols cannot be registered as trademarks under Brazilian law.
✅ Examples of Prohibited Trademarks:
❌ National flags or government symbols.
❌ Offensive or misleading terms.
❌ Well-known names without authorization (e.g., “Coca-Cola” by an unrelated company).
📌 Lesson: Review INPI’s trademark rules before filing an application.
2. What to Do If Your Trademark Is Rejected?
If INPI issues a rejection decision (indeferimento), you have several legal options:
2.1 File an Appeal (Recurso Administrativo)
✅ Deadline: You have 60 days from the publication date in the Industrial Property Journal (Revista da Propriedade Industrial – RPI) to file an appeal.
✅ Goal: The appeal asks INPI to reconsider the decision, providing legal arguments and additional evidence.
🚨 When Is an Appeal Effective?
- If INPI misinterpreted the similarity between trademarks.
- If the previous registered trademark is not being actively used.
- If you can prove distinctiveness of your brand.
📌 Example:
- A bakery brand applied for “Pão Mágico”, but was rejected because of an existing “Pão Mágico Doces” trademark.
- The applicant proves that their brand operates in a different market segment, and INPI reverses the rejection.
📌 Tip: Hiring a trademark specialist increases your chances of a successful appeal.
2.2 Negotiate a Coexistence Agreement
🚨 If your trademark was rejected due to a conflict with another registered brand, you can negotiate a “coexistence agreement” with the owner.
✅ How It Works:
- You contact the owner of the registered trademark.
- You both sign an agreement stating that your businesses do not compete directly.
- You present the agreement to INPI, requesting reconsideration of your application.
📌 Example:
- A tech company applied for “NovaCloud”, but was rejected because of an existing “NovaCloud Solutions” trademark.
- Both companies agree that their services do not overlap, and they submit a coexistence agreement.
- INPI reconsiders the application and approves the registration.
📌 Lesson: Not all trademark conflicts require legal battles—sometimes, negotiation works best.
2.3 Modify and Reapply for Registration
🚨 If an appeal is unlikely to succeed, you can submit a new trademark application with modifications.
✅ Strategies for Reapplying:
- Adjust the brand name slightly (e.g., add a unique word or design).
- Register a logo instead of just the name.
- Change the classification category if applicable.
📌 Example:
- A company applied for “GoldFit” in Class 25 (clothing) but was rejected.
- They modify the brand name to “GoldFit Wear” and successfully register it.
🚨 Lesson: Small adjustments can make a big difference in securing a trademark.
3. What If the Trademark That Blocked My Application Is No Longer in Use?
🚨 Many trademarks remain registered even though they are no longer in commercial use.
✅ Solution: File a Request for Trademark Cancellation (Pedido de Caducidade)
If the trademark that caused your rejection is not being used by its owner for at least 5 years, you can request caducidade (cancellation due to non-use).
✅ Steps to File a Caducidade Request:
1️⃣ Gather proof that the trademark has not been used (e.g., lack of advertising, no active website, no products in stores).
2️⃣ Submit a formal request to INPI to cancel the inactive trademark.
3️⃣ If INPI grants the request, the trademark is removed from the registry, allowing you to reapply for your brand name.
📌 Example:
- Your “Bella Moda” clothing brand was rejected because of an old “Bella Moda Store” trademark.
- You investigate and find that the previous brand has been inactive for over 5 years.
- You file a caducidade request, INPI cancels the old trademark, and you successfully register “Bella Moda”.
🚨 Lesson: If an old, unused trademark is blocking your registration, you may be able to get it removed.
4. Common Mistakes to Avoid When Reapplying for a Trademark
❌ Ignoring the Rejection Notice – You have limited time to appeal or reapply.
❌ Reapplying Without Changes – If you submit the same application, it will likely be rejected again.
❌ Not Conducting a New Trademark Search – Before reapplying, ensure no similar trademarks exist.
❌ Waiting Too Long to File a Caducidade Request – The longer you wait, the harder it may be to prove non-use.
📌 Tip: If your application was rejected, work with a trademark professional to explore your best options.
Conclusion
A trademark rejection is not the end of the process—it’s just a challenge to overcome. Businesses have several options to fight a rejection, negotiate a solution, or reapply with a stronger strategy.
✅ File an appeal if INPI made an incorrect decision.
✅ Negotiate a coexistence agreement with the trademark owner.
✅ Modify and reapply for registration with a stronger brand identity.
✅ Request trademark cancellation (caducidade) if the conflicting brand is no longer in use.
As the saying goes, “Success belongs to those who refuse to give up.” If your trademark was rejected, take action, explore your legal options, and secure the rights to your brand.
